PROSECUTING DESIGN PATENTS FOR ENFORCEMENT
Short episodes on what design patent litigation teaches about prosecution.
Presented by Robert G. Oake, Jr., lead counsel in Egyptian Goddess v. Swisa.
Episode 1: Prosecution History Disclaimer after Top Brand v. Cozy Comfort
This episode discusses how the Federal Circuit applied prosecution history disclaimer to a design patent in Top Brand v. Cozy Comfort, and what that means for how you draft and argue responses to office actions so the patent holds its scope when it is later enforced. It also covers the related doctrine of prosecution history estoppel.
Episode 2: The Title after Curver Luxembourg v. Home Expressions
A design patent claims a design applied to an article of manufacture, and when the drawings show no article, the title and claim language supply it. This episode discusses how that decided Curver Luxembourg v. Home Expressions, where a pattern claimed for a chair could not be asserted against a basket, why In re SurgiSil shows the same article-identifying language can also defeat anticipation, and how to choose and amend the title deliberately during prosecution.
Episode 3: Obviousness after LKQ v. GM
LKQ v. GM replaced the rigid two-part test for design patent obviousness with the Graham factors, and challengers are already testing the new standard. This episode covers five prosecution decisions that make an obviousness attack harder to mount: the search, the remarks, the family, the title, and the alignment between the claimed design and the product.